Monthly Archives: September 2015

Denying Institution Where Petitioner had not Established a Reasonable Likelihood of Prevailing on at Least One Claim IPR2015-00873

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Takeaway: Grounds raised during a preliminary proceeding, but not made part of the instituted trial, are not raised “during” an inter partes review and thus cannot be the basis for estoppel under 35 U.S.C. § 315(e)(1).

In its Decision, the Board declined to institute the inter partes review of claims 1-23 of the ‘828 patent. It was the Board’s view that Petitioner had not established a reasonable likelihood of prevailing on its positions with respect to these claims.

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Decision Denying Institution IPR2015-00612

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Takeaway: The Board does not have the authority to determine whether an application was abandoned or improperly revived when determining whether a challenged claim is entitlted to claim priority to a an earlier-filed application.  

In its Decision, the Board denied institution and determined that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims (claims 1-15) of the ’871 Patent. The ’871 Patent relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.”  Continue reading →

Granting Institution of Inter Partes Review Over Objection that All Real Parties-in-Interest Were Not Identified IPR2015-00864

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Takeaway: Petition was not dismissed where Patent Owner was able to show some blurring of the corporate separation between parent and subsidiaries, because Petitioner was able to declare that the parent company was not paying or making any decisions related to the proceeding and that the outside counsel handling the proceeding was corresponding to and being paid by only Petitioner.

In its Decision, the Board granted institution of the challenged claims (1-27) of the ’703 Patent. The ’703 Patent “relates to methods for preventing or treating diseases caused by thrombus or embolus by administering an effective amount of 2-acetoxy-5-(α-cyclopropylcarbonyl-2-fluorobenzyl)-4,5,6,7-tetrahydrothieno[3,2-c]pyridine, or a pharmaceutically acceptable salt thereof, and aspirin to warm-blooded animals, particularly humans.” Continue reading →

Final Written Decision Turning on Claim Construction IPR2014-00639

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Takeaway: A request for reconsideration of the Board’s previous claim construction, without a cogent explanation of how the Board’s claim construction is in error, may not be persuasive.

In its Final Written Decision, the Board concluded that Petitioner has shown by a preponderance of the evidence that claims 1-4 of the ’609 patent are unpatentable. Continue reading →

Institution Denied Because No Claim Directed To Financial Product or Service CBM2015-00107

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Takeaway: Where the claims and specification are not tied to a financial product or service, and the specification does not indicate any particular usefulness in financial products, services, or activities, the Board may determine that the patent is not a covered business method patent under § 18(d)(1) of the AIA.

In its Decision, the Board denied institution of covered business method patent review of claims 1-3, 12, 14, 21, 22, 24-26, 35, 37, 44, 45, 56-58, 67, 69, 76, 77, 79, 80, 83, 85, and 88-90 of the ’683 patent. Claim 79 was selected as an exemplary claim for Petitioner’s challenge and the Board’s analysis. Continue reading →

Denying Motions to Vacate because Un-named Members of Corporate Group were Separate Entities IPR2015-00808, 814, 815, 818, 819, 823, 824

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Takeaway: Absent a “compelling reason to disregard entity separateness,” members of a corporate group should be treated as separate entities.

In its Order, the Board denied Patent Owner’s Motion to Vacate because of an alleged failure of Petitioner to name two corporate entities as real parties in interest (RPI). Patent Owner filed similar Motions to Vacate in seven inter partes review proceedings, alleging that because at least two entities were not identified as an RPI, the Petitions should not be entitled to a filing date, 35 U.S.C. § 312(a)(2), and were therefore time-barred under 35 U.S.C. § 315(b). Continue reading →

Conception Not Established in Final Written Decision Finding Challenged Claims Unpatentable IPR2014-00504

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Takeaway: Conception requires contemporaneous recognition and appreciation of the limitations of the claimed invention, not merely fortuitous inherency. Inventor testimony alone is insufficient to prove conception; some form of corroboration must be shown.

In its Final Written Decision, the Board found all challenged claims of the ‘771 patent unpatentable and dismissed Petitioner’s motion to exclude. Specifically, the Board determined that “Petitioner has shown by a preponderance of the evidence that claims 1-4, 7, and 18 of the ‘771 patent are unpatentable.” The ‘771 patent relates to “providing a mobile wireless access point for use with high-speed wireless devices.” Continue reading →

Final Written Decision Finding All Challenged Claims Anticipated and Obvious IPR2014-00325

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Takeaway: A wherein clause is given patentable weight if the clause states a condition that is material to patentability.

In its Final Written Decision, the Board found that all challenged claims (15-19) of the ’832 Patent are unpatentable. The ’832 Patent generally “relates to compositions and methods for treating narcotic dependence using an orally dissolvable film comprising buprenorphine and naloxone, wherein the film provides a bioequivalent effect to Suboxone®.” “The ’832 patent defines bioequivalent as ‘obtaining 80% to 125% of the Cmax and AUC values for a given active in a different product.’” “According to the ’832 patent, ‘Cmax refers to the mean maximum plasma concentration after administration of the composition to a human subject,’ and ‘AUC refers to the mean area under the plasma concentration-time curve value after administration of the compositions.’” Continue reading →

Denying Institution Of Second Petition By Same Petitioner Against Same Patent IPR2015-00776

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Takeaway: Where a petition presents the same prior art and substantially the same arguments as a prior petition, the Board may exercise its discretion and deny institution of inter partes review.

In its Decision, the Board denied institution of inter partes review (“IPR”) of claims 1-53 of the ’041 patent. The Board stated that the Petition advanced the same challenges to the ’041 patent as the IPR2014-01177 proceeding (“the ’01177 proceeding”) in which the board declined to institute IPR. Continue reading →